weber-stephen products v. sears holding- sj order
TRANSCRIPT
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UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
E ASTERN DIVISION
WEBER-STEPHEN PRODUCTS LLC, )
)
Plaintiff, ) No. 13 C 01686
)
v. )
) Judge Edmond E. Chang
SEARS HOLDING CORPORATION and )
SEARS, ROEBUCK & CO., )
)
Defendant. )
MEMORANDUM OPINION AND ORDER
I. Introduction
Weber-Stephen Products LLC makes and sells Weber grills. Sears Holding
Corporation and Sears, Roebuck & Company own and operate retail and online
stores.1 Sears also makes and sells its own grills under the Kenmore brand name.
Sears also sold Weber’s grills until Weber stopped supplying Sears in 2012. Not long
after that, Weber sued Sears, alleging, among other things, that Sears’s Kenmore
Elite grills infringed on three of Weber’s patents. Sears countersued, seeking
declarations of invalidity and non-infringement as to each patent.2
In three separate summary judgment motions (one for each asserted patent),
Sears asks for judgment as a matter of law against Weber’s patent-infringement
1This Opinion will refer to the two Defendants collectively as Sears.
2The Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1338(a) & (b),
2201, 2202, and 1367(a). Docket citations are noted as “R.” followed by the docket number
and the page or paragraph number.
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claims and in favor of Sears’s corresponding counterclaims. For the reasons set out
below, the motions are granted in part and denied in part.
II. Background
This is the seventh written opinion in this case,3 and the fourth on a
summary judgment record. See R. 424, R. 419, R. 285. The prior summary judgment
opinions discuss the background facts, so the Court will assume the reader’s
familiarity with those facts and turn immediately to a description of the relevant
patents.
A. The Patents
These motions concern three Weber patents: the ’874 Utility Patent; the ’045
Grill Design Patent; and the ’834 Grill Shroud Design Patent. Here, briefly, is a
description of each.
1. The ’874 Utility Patent
Weber obtained U.S Patent No. 8,347,874 for a “Grease Drip Pan and Gas
Tank Blocker for a Barbecue Grill.” R. 347-1, ’874 Patent at 2. The patent claims
various “barbecue grill assembl[ies],” id. at 11, which all include “a cooking
chamber, a frame assembly, and a tank blocking structure.” Id. Some claims also
include grease drip trays, grease drip pans, and fuel tanks. Id. at 10 (e.g., Claim 14).
3R. 50, Order Denying Sears’s Motion to Dismiss Weber’s Trade Dress Claim; R. 116,
Order Granting in Part and Denying in Part Weber’s Motion to Dismiss Certain
Counterclaims and Strike Certain Affirmative Defenses; R. 235, Order on Claim
Construction; R. 285, Order Granting in Part and Denying in Part Weber’s Motion for
Summary Judgment on Sears’s Antitrust and Breach of Contract Claims; R. 419, Order
Denying Sears’s Summary Judgment Motion on Weber’s Trade Dress Claim as to
Secondary Meaning; R. 424, Order Denying Sears’s Summary Judgment Motion on Weber’s
Trade Dress Claim as to Likelihood of Confusion.
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The gist of the patent is to use a tank-blocking structure to prevent the grill user
from storing a spare gas tank in the grill cart and, for some claims, to integrate the
tank-blocking structure with the grease-catching components. By integrating tank
blocking (a safety measure that some grill users avoid for convenience’s sake) and
grease catching (something grill users must have), the inventors hoped to force the
user to install the tank blocker in the first place and to keep the user from removing
it. Id. at 8 (“Unfortunately, it is believed that some consumers will not install the
tank blockers or will remove them when they find out that they will be unable to
store a replacement tank on the cart.”).
Figure 3 shows an example of the invention:
Id. at 5. Here, component Nos. 64 and 62 are the tank-blocking structure and No. 66
is a “recess (or holder or support) for supporting a grease drip pan,” which is not
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itself shown in this figure. Id. at 9 (Detailed Drawing Description). Grease is
collected in the “grease drip tray,” which is component No. 80, and is “direct[ed] to
the grease drip pan” resting on top of the tank-blocking structure. Id.
2. The ’045 Grill Design Patent
Weber’s ’045 design patent (U.S. Design Patent No. 609,045) claims “the
ornamental design for a grill, as shown and described.” R. 328-1, ’045 Patent. This is
a “perspective view of a grill embodying the invention.”
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And here is “a front view.”
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And “a rear view.”
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And finally “a left side view.”
Worth noting is that several prominent features are drawn in broken lines and
therefore not claimed as part of the patented design. See Manual of Patent
Examining Procedure (MPEP) § 1503.02.II (broken lines indicate unclaimed
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features). These include the temperature gauge, the “Weber” nameplate, the trim
and handles on the grill cart doors, the casters, and the burner knobs.
3. The ’834 Shroud Design Patent
Weber’s ’834 Design Patent (really U.S. Design Patent No. 564,834) claims
“the ornamental design for a shroud for a barbecue grill, as shown and described” in
seven figures. R. 334-1, ’834 Patent at 2. Here is “a perspective view of a shroud for
a barbecue grill showing our new design”:
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And here is “a right side view”:
B. The Accused Sears Kenmore Elite Grills
Weber’s patent-infringement arguments are directed at four “series” of
Sears’s Kenmore Elite grills. According to Weber, the Kenmore Elite 500 Series
grills infringe on the ’874 utility patent. And, as to both design patents, Weber
accuses the Kenmore Elite 500, 550, 600 and 700 Series grills of infringement. (The
500/550 are, for design patent infringement purposes, the same. R. 423, Stipulation
at 2.)
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The 500/550 grills look like this from the front:
R. 423-1, Exemplars.
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And like this from the back:
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And like this from the side:
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From the side and back, the 600 and 700 Series grills are similar enough to the
500/550 series that additional pictures are unnecessary here (though the Court has
reviewed them and considered the differences). The main differences are visible
from the front. Here is the 600 Series:
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And here is the 700 Series:
The parties agree that the differences within a particular series are immaterial to
the design patent infringement analysis. Stipulation at 1-2. But they ask the Court
to consider each of the three series separately for infringement purposes. Id. The
upshot of this is that if any one of a particular series of grills infringes on one of
Weber’s design patents, then all the grills in that series do too. Id. And, conversely,
if any do not infringe, then none do.
C. These Motions
Sears filed a summary judgment motion as to each patent. R. 332, Sears’s
’834 Mot.; R. 326, Sears’s ’045 Mot.; R. 345, Sears’s ’874 Mot. Each motion argues
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that the targeted patent is invalid and, even if valid, is not infringed by the accused
grills.
III. Standard of Review
Summary judgment is proper “if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter
of law.” Fed. R. Civ. P. 56(a). A genuine dispute exists if “the evidence is such that a
reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986). In evaluating summary judgment motions,
courts must view the facts and draw reasonable inferences in the light most
favorable to the non-moving party. Scott v. Harris, 550 U.S. 372, 378 (2007). The
Court may not weigh conflicting evidence or make credibility determinations,
Omnicare, Inc. v. UnitedHealth Grp., Inc., 629 F.3d 697, 704 (7th Cir. 2011), and
must consider only evidence that can “be presented in a form that would be
admissible in evidence” at trial, Fed. R. Civ. P. 56(c)(2). The party seeking summary
judgment has the initial burden of showing that there is no genuine dispute and
that they are entitled to judgment as a matter of law. Carmichael v. Village of
Palatine, 605 F.3d 451, 460 (7th Cir. 2010); see also Celotex Corp. v. Catrett, 477
U.S. 317, 323 (1986); Wheeler v. Lawson, 539 F.3d 629, 634 (7th Cir. 2008). If this
burden is met, the adverse party must then “set forth specific facts showing that
there is a genuine issue for trial.” Anderson, 477 U.S. at 256.
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IV. Analysis
The analysis of the motions proceeds as follows. First, the Court will address
the parties’ challenges to each other’s proffered expert-opinion evidence. Then, the
Court will consider the ’874 patent, addressing infringement and then validity.
Lastly, the Court will turn to the design patents, assessing first the infringement
question as to both and then validity as to both.
A. Expert Opinion Evidence
Summary judgment is about determining whether the evidence justifies a
trial. To do that, the Court must first decide what counts as evidence. To remove a
piece of evidence from consideration on summary judgment, “[a] party may object
that the material cited to support or dispute a fact cannot be presented in a form
that would be admissible in evidence [at trial].” Fed. R. Civ. P. 56(c)(2). Here, Weber
and Sears take aim at the admissibility of each other’s expert evidence. Each
challenged expert—Jim Gandy, John Holecek, and J. Michael Alden—will be
addressed in turn.
1. Jim Gandy
Jim Gandy is Sears’s design patent expert. R. 334-13, Gandy Rep. ¶ 1. Gandy
opines that both the ’834 patent and the ’045 patent are invalid, each for several
reasons. Gandy Rep. ¶¶ 2-6. Weber moves to exclude these opinions for two reasons.
R. 372, Weber’s ’834 Resp. Br. at 1-2. Neither justifies exclusion.
First, Weber argues that Gandy is not qualified under Rule 702 of the
Federal Rules of Evidence. Id. The rule allows a witness to “testify in the form of an
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opinion or otherwise” if that witness is “qualified as an expert by knowledge, skill,
experience, training, or education.” Fed. R. Evid. 702. “[A] court should consider a
proposed expert’s full range of practical experience as well as academic or technical
training when determining whether that expert is qualified to render an opinion in
a given area.” Smith v. Ford Motor Co., 215 F.3d 713, 718 (7th Cir. 2000). On-the-
job experience counts as practical experience. See Walker v. Soo Line R. Co., 208
F.3d 581, 590-91 (7th Cir. 2000) (holding that district court did not abuse its
discretion in admitting expert testimony from “Denbrock [who] was offered as an
expert on the basis of his work for a power company, where he was responsible for
ensuring the safety of its facilities from lightning”).
Gandy has plenty of on-the-job experience. Gandy Rep. ¶¶ 10-14; R. 415-1,
Sears’s Exh. AA, Gandy Dep. 18-19, 21-23. Gandy spent 32 years in the USPTO
evaluating design patents, including design patents in the “classes” to which the
’834 and ’045 patents belong. Id.; ’834 Patent at 1 (identifying class as D7); ’045
Patent at 1 (same); Gandy Rep. ¶ 11 (“I have examined design patent applications
assigned to class … D7 ‘Equipment for Preparing or Serving Food or Drink not
elsewhere specified’ … .”). He trained and supervised examiners on design patent
issues; he responded to public and attorney questions about design patents; and he
was “in charge” of updating the design-patent portions of the agency’s Manual of
Patent Examining Procedure. Id. Because Gandy spent three decades making the
same kinds of evaluations Sears hired him to make for this litigation, it stands to
reason that he is qualified.
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Notwithstanding Gandy’s experience, Weber complains that Gandy lacks an
industrial design degree (Gandy’s degree is in architectural design), grill-industry
experience, and experience examining grill-related design-patent applications.
Weber’s ’834 Resp. Br. at 1-2. But subject-matter specific experience is not an
absolute prerequisite in design-patent cases, especially where the expert has other
relevant experience. See Lemelson v. Gen. Mills, Inc., 1987 WL 26134, at *1 (N.D.
Ill. Dec. 1, 1987) (allowing former-USPTO employee with fifty years of experience to
testify on patentability in design-patent dispute despite lack of experience in toy
design); see also Nat’l Diamond v. Flanders Diamond, 2003 WL 24890292, at *1
(N.D. Ill. Apr. 30, 2003) (finding former USPTO employee unqualified to testify
because he lacked both subject-matter experience and design patent experience).
Three decades of USPTO experience in considering design patent applications,
including design patents in the patent classification to which these two patents
belong, is enough experience to qualify as an expert under Rule 702.
Second, Weber seeks to exclude Gandy because, it says, his testimony will not
help the jury. Weber’s ’834 Resp. Br. at 1-2. Opinion testimony by an expert, no
matter how qualified, is inadmissible unless it “will help the trier of fact to
understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702(a).
Under this rule, other courts have excluded experts who “admit[ted] that counsel []
actually did the typing” of their reports, in which “[l]arge quantities of [the
retaining party’s] interrogatory responses appear verbatim.” E.g., DataQuill Ltd. v.
Handspring, Inc., 2003 WL 737785, at *4 (N.D Ill. Feb. 28, 2003) (“We doubt the
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value to the trier of the fact of a hired expert’s opinion when the party hiring him
has put words in his mouth.”). Weber claims the “same rationale applies here”
because, according to Weber, “[Gandy’s] expert report is a carbon copy of Sears’
Final Invalidity Contentions prepared by Sears’ attorneys months ago.” Weber’s
’834 Resp. Br. at 1-2. Not so.
Unlike the expert in DataQuill, Gandy appears to have written his report; at
least Weber has not proven otherwise. Gandy’s report is not a verbatim duplicate of
any of Sears’s filings. The report is in fact much more detailed than Sears’s
Invalidity Contentions. Compare Gandy Rep. ¶¶ 15-95 with R. 377-9, Sears’ Final
Invalidity Contentions. And, as Sears points out, Gandy did not even agree with
Sears—his own client—that the ’045 patent is invalid as obvious. Sears’s ’834 Reply
Br. at 13. This suggests independence rather than puppetry. In light of all this,
Weber’s argument to exclude Gandy as simply regurgitating Sears’s contentions is
rejected.
2. John Holecek
John Holecek is Weber’s proposed expert on utility and design-patent
infringement. R. 398-2, Holecek Rep. at 1. Holecek “conclude[s] that the Accused
Grills infringe claims 1-4, 6-10, and 14-20 of the ’874 utility patent … as well as
certain elements of each of the ’834 and ’045 design patents.” Id. Sears argues that
Holecek’s design-patent opinions are inadmissible for two reasons. Sears ’834 Reply
at 13-14. First, Sears argues that Holecek is Weber’s puppet: “Holecek could not
identify a single position that Weber has taken in this case concerning its patents
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with which he disagrees” and “everything Mr. Holecek knows about design patent
infringement comes from Weber’s counsel. The only thing Mr. Holecek knew about
design patents coming into this case was that they are different from utility
patents.” Id. Second, Sears argues that Holecek’s “opinions as to the design patents
are nothing more than ipse dixit,” id. at 14, meaning that, as to the design-patent
opinions, Holecek does not explain why he holds those opinions.
The Court agrees that Holecek’s design-patent infringement opinions must be
excluded based on Sears’s second argument. “[A]n expert’s ipse dixit is
inadmissible.” Wendler & Ezra, P.C. v. Am. Int'l Grp., Inc., 521 F.3d 790, 791 (7th
Cir. 2008). Holecek’s infringement opinions amount to nothing more than the
conclusions themselves. Except for a brief overview of the law, the entirety of the
infringement analysis on the ’834 patent is this:
As depicted in its seven drawn figures, the ’834 design patent claims
an ornamental design for a shroud of a barbecue grill. Based on my review of
the drawn figures of the ’834 design patent, applying the “ordinary observer”test as described above, and bearing in mind differences between the design
of the ’834 design patent, the Accused Grills, and alleged prior art grills
identified by Sears, I conclude that the design of the Accused Grills’ shroud or
lid is, if not the same, at least substantially the same as that claimed in the
’834 patent, and that the resemblance between the two is sufficient to deceive
an ordinary observer in the course of making purchasing decisions.
The most compelling visual evidence I have seen of the substantial
similarity between the claimed and accused designs is in the side-by-side
comparison of the figures of the ’834 design patent and photographs of the
Accused Grills as shown, for example, at pages 2, 7, 9, 10, 12, 14, 15, 17 ofExhibit B to Weber’s Final Infringement Contentions. In simple terms, one
looks very much like the other.
Holecek Rep. at 43-44. His opinion on the ’045 patent is the same length and follows
the same format. Id. at 44-45. Holecek’s report contains all his opinions in the case;
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he added nothing at his deposition and said he had nothing to add. R. 398-3,
Holecek Dep. 20:6-23.
So all Holecek will say about infringement is that there is infringement and
that he can tell primarily by looking at a few pictures. He does not say how (or
whether) he considered any differences between the claimed and accused designs,
and why those differences do not matter. He does not say which features, if any,
would be more or less important to the analysis. He does not use his experience in
the industry to say, for example, that consumers tend to notice or not notice certain
features. He adds nothing but his conclusion, which is unhelpful because it is just a
conclusion.
Weber’s response to Sears’s arguments does not respond to this point. R. 418,
Weber’s Holecek Sur-Reply. Weber does not argue, for example, that Holecek
explained how he got from his source materials to his conclusion in his deposition.
Accordingly, Holecek’s design-patent infringement opinions are excluded. To be
clear, his opinions on functionality are not part of this decision. Functionality was
not raised as part of the summary judgment motions and Sears never moved to
exclude these opinions. This issue might be a proper subject for a pre-trial motion in
limine, but there is no basis on which to decide the issue at this stage.
3. J. Michael Alden
J. Michael Alden is Weber’s design-patent expert on validity. R. 417-1, Alden
Rep. at 1. Sears argues that “Alden’s opinions should be excluded and disregarded
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for one4 simple yet critical reason: He applies the incorrect level of skill in the art to
the question of invalidity of Weber’s design patents.” R. 405, Sears’s ’045 Reply Br.
at 11. The correct level of skill is that of the ordinary designer. E.g., Personalized
Media Communications v. Int’l Trade Comm’n, 161 F.3d 696, 706 (Fed. Cir. 1998).
Sears argues that Alden applied his own, extraordinary level of skill to his analysis.
For this reason, Sears argues, Alden’s opinion is unreliable and therefore
inadmissible under Rule 702.5 Weber does not contest Sears’s legal premise—that, if
Alden failed to analyze the patents from the correct perspective, his opinions are
inadmissible as unreliable. (They would probably also be inadmissible as
irrelevant—because they would analyze a question that does not matter to the
case.) So, as the parties have framed the issue, the only question is whether Alden
applied the correct perspective to his analysis. Although the issue is not free from
doubt, the Court is reasonably certain that he did.
Sears—relying on some convoluted Q & A from Alden’s deposition—insists
that Alden admitted that (a) he did the analysis from his own perspective and that
(b) his perspective is that of an extraordinary, rather than ordinary, designer.
Sears’s ’045 Reply Br. at 11-13. Sears is not completely wrong. If several ambiguous
questions and several ambiguous answers are each construed in Sears’s favor, then
4
Sears hints at, but does not argue, other bases for exclusion. E.g., R. 405, Sears’s’045 Reply Br. at 15 (citing Fed. R. Evid. 403). Given the absence of development and Sears
explicitly claiming only “one simple yet critical reason” for exclusion, the Court will
disregard these passing references.5Sears never explicitly identifies the legal basis of this wrong-skill-level theory of
inadmissibility. But it does cite Neutrino Dev. Corp. v. Sonosite, Inc., 410 F. Supp. 2d 529,
550-51 (S.D. Tex. 2006), as its principal case. Nuetrino corresponds to a similar argument,
framed as a reliability argument. Id. So the Court will construe Sears’s argument as a
reliability argument as well.
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the testimony supports Sears’s position. So this is a close call. But the Court must
side with Weber for three reasons.
First, when the question is put to Alden directly, he comes up with the right
answer: “I looked at it from the point of view as an ordinary designer, not an expert
designer.” R. 369-1, Alden Dep. 208:3-15. And his report repeatedly refers to the
correct standard. Alden Rep. at 8 (“I have carefully reviewed the alleged prior art
combinations described in Mr. Gandy’s report and referenced materials and
conclude that from the perspective of the ordinary designer … .”). If Alden just got
confused at parts of his deposition, then that does not necessarily make his opinions
unreliable. Second, the Court is reluctant to exclude Alden based on Sears’s chosen,
ambiguous testimony—it just is not clear from the transcript that Alden and his
questioner were talking about the same thing. The passage where Sears says Alden
implicitly admitted he applied the wrong perspective is garbled and susceptible to
exculpatory interpretations. Finally, the Court notes that Sears points to nothing in
Alden’s analysis itself—nothing about his conclusions or how he reached them—
that supports its argument. If Sears were able to back up its assertion that Alden
applied a higher-than-appropriate level of skill to his analysis by pointing to some
portion of that analysis and saying, for example, “an ordinary designer would not do
that,” then the result may well have been different. But it did not do that. Alden’s
testimony stands.
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B. Utility Patents Versus Design Patents
The Constitution grants Congress the power to “promote the Progress of
Science and useful Arts, by securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and Discoveries.” U.S. Const. art. 1, § 8.
cl. 8. Among these exclusive rights are patents. One type of patent is a utility
patent: “Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof,
may obtain a patent therefor … .” 35 U.S.C. § 101. And another type is for designs:
“Whoever invents any new, original and ornamental design for an article of
manufacture may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 171.
Design patents, unlike utility patents, are limited to a single claim. See 37
C.F.R. § 1.153(a) (“More than one claim is neither required nor permitted.”).
Typically, as with the patents here, that single claim will be for “the ornamental
design for [some article of manufacture, like a grill] as described and shown” in the
patent drawings. E.g., ’045 Patent; ’834 Patent. The drawings may include
unclaimed features, indicated typically with broken lines. See MPEP § 1503.02.II;
see also Apple, Inc. v. Samsung Electronics Co., 678 F.3d 1314, 1317 (Fed. Cir. 2012)
(“The parts of the side beyond the bezel, as well as the phone’s back, are disclaimed,
as indicated by the use of broken lines in the patent figures.”). The drawings thus
control the scope of the patent; that is, the scope of the patentee’s right to exclude
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others. See David A. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed.
Cir. 2010).
Here, Sears is challenging one of Weber’s utility patents—the ’874 patent—
and two of its design patents—the ’045 patent and the ’834 patent. The Court will
address the utility patent first and then the design patents.
1. The ’874 Utility Patent
Weber claims that Sears’s Kenmore Elite 500 Series grills infringed on the
’874 Utility Patent. R. 138, Am. Compl. ¶¶ 17-32 (Count 1). Specifically, Weber
asserts claims 1-4, 6-8, and 14-20. Am. Compl. ¶ 28; R. 356, Weber’s ’874 Resp. Br.
at 1 n.2. Sears, in turn, argues that the 500 Series grills do not infringe those claims
and that the patent is invalid. R. 346, Sears’s ’874 Br. at 1-2. As detailed below, the
Court concludes that claims 9-13 of the patent are invalid as anticipated, so the
summary judgment motion is granted as to those claims, but the motion is
otherwise denied.
a. Super-Sack Argument
Before getting to the merits, a jurisdictional detour is required. Weber argues
that the Court lacks jurisdiction over its infringement claim and Sears’s
counterclaims as to patent claims 5 and 9-13 because “Weber will shortly issue a
‘Super Sack’ covenant against suit in favor of Sears” on those claims. Weber’s ’874
Br. at 1, n.1. Super Sack refers to a case where the Federal Circuit affirmed a
district court holding that a covenant not to sue on a patent, offered in a parties’
brief, rendered a declaratory judgment claim non-justiciable under Article III’s case
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or controversy requirement. Super Sack Mfg. Corp. v. Chase Packaging Corp., 57
F.3d 1054, 1059 (Fed. Cir. 1995). Although Super Sack relied on a now-discredited
jurisdictional test, see Teva Pharm. USA, Inc. v. Novartis Pharm. Corp., 482 F.3d
1330, 1339 (Fed. Cir. 2007) (“the Supreme Court in a detailed footnote stated that
our two-prong ‘reasonable apprehension of suit’ test ‘conflicts’ with and would
‘contradict’ several cases in which the Supreme Court found that a declaratory
judgment plaintiff had a justiciable controversy.”) (citing MedImmune, Inc. v.
Genentech, Inc., 549 U.S. 118, 132 n.11 (2007)), the basic premise remains valid—no
dispute means no jurisdiction.
But Weber is wrong that the statements in its briefing dissolve its dispute
with Sears. The jurisdiction question boils down to whether “under all the
circumstances … there is a substantial controversy, between the parties having
adverse legal interests, of sufficient immediacy and reality … .” Teva, 482 F.3d at,
1337 (citing MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007)). Here,
the circumstances portray a live dispute. First, Weber sued Sears and has not taken
any irrevocable steps to withdraw any of its claims: it has not dismissed any of its
claims with prejudice, see Mostly Memories, Inc. v. For Your Ease Only, Inc., 526
F.3d 1093, 1098 n.1 (7th Cir. 2008) (recognizing that dismissal with prejudice of
affirmative claims divested jurisdiction over declaratory judgment counterclaims in
copyright case); nor has it actually delivered to Sears an enforceable covenant not to
sue. So the case is still live.
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The only thing that muddies the jurisdictional waters at all is Weber saying
that it will “shortly” give Sears a covenant not to sue. But that statement alone is
not enough to deprive the Court of jurisdiction for three reasons. First, the Court is
reluctant to give what amounts to a non-binding statement to sometime in the
future make a binding promise any effect at all. Second, Weber said it would
“shortly” issue the covenant more than four months ago. Yet, as far as the record
shows (no supplement on this issue has been filed), it still has not happened. That
delay makes the Court even more reluctant to give effect to Weber’s statement. And
finally, other similarly ambiguous statements have been held insufficient to deprive
courts of jurisdiction over declaratory relief claims. See Arris Grp., Inc. v. British
Telecommunications PLC , 639 F.3d 1368, 1381 (Fed. Cir. 2011) (recognizing, under
similar circumstances, that ambiguous statements are not enough to dissolve
jurisdiction); Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1341 (Fed. Cir.
2008) (same). The Court’s jurisdiction is secure.
b. Invalidity
Sears argues that all of the ’874 patent’s claims are invalid as either
anticipated by prior art or obvious in light of prior art. Sears’s ’874 Br. at 4-5.
Anticipation means that some prior art discloses “every limitation of the claimed
invention, either explicitly or inherently.” Telemac Cellular Corp. v. Topp Telecom,
Inc., 247 F.3d 1316, 1327 (Fed. Cir. 2001). A patent claim is obvious “if the
differences between the subject matter sought to be patented [and prior art] would
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have been obvious at the time the invention was made to a person having ordinary
skill in the art … .” 35 U.S.C. § 103(a).
Sears’s motion is granted as to patent claims 9-13 for two reasons. First,
Weber does not contest Sears’s motion as to those claims. Weber’s ’874 Rule 56.1
Statement ¶ 53. Second, these claims are, in fact, anticipated. Claims 9-13 purport
to assert, as relevant here, a grill frame assembly with a tank blocking structure
(these are the claims that do not mention connecting the tank blocking structure to
a grease control system). ’874 Patent. At that level of generality, certain Kenmore
prior art disclosed all these limitations, as this diagram shows:
R. 347-15, Kenmore Operators Manual at 10. This Kenmore grill schematic exhibits
a grill frame assembly with a tank blocking structure that is generally “L” shaped.
That is enough to anticipate claims 9-13. Accordingly, summary judgment is
appropriate as to those claims.
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from removing a tank blocking structure. Neither patent, alone or in combination,
points in the direction of integration.
Returning to the claim that was earlier set aside, claim 5: Weber did not
defend claim 5’s validity, but the Court will nonetheless deny summary judgment
on it. Claim 5 involves integrating the tank blocking structure and the grease
management system so, like the other integration claims, it is neither obvious nor
anticipated. Having said that, if Weber wants to voluntarily dismiss any reliance on
this claim, then Weber must make that clear at the next status hearing.
c. Infringement
“[W]hoever without authority makes, uses, offers to sell, or sells any patented
invention … infringes the patent.” 35 U.S.C. § 271(a). The infringement analysis
takes two steps: claim construction and then “comparison of the claim to the
accused device, requir[ing] a determination that every limitation … be found in the
accused device.” In re Gabapentin Patent Litig., 503 F.3d 1254, 1259 (Fed. Cir.
2007). Here, Weber asserts that the Kenmore Elite 500 Series grills infringe on
claims 1-4, 6-8, and 14-20 of the ’874 patent (as already constructed, see R. 285,
Claim Construction Order). R. 357, Weber’s ’874 Rule 56.1 Statement ¶ 7 (“The
remaining asserted claims of the ’874 utility patent are claims 1-4, 6-8, and 14-20”).
Sears has one argument: None of its grills infringe because they do not practice one
limitation that is common to all the asserted claims.
Specifically, Sears says that “[a]ll of the ’874 patent claims require a tank
blocking structure that prevents one of two fuel tanks of equal size from being
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disposed in the grill frame assembly at the same time.” Sears’s ’874 Br. at 4. Sears
says that this limitation cannot be found in its 500 Series grills because the
“structure asserted to constitute a tank blocking structure in the Kenmore 500 grills
indisputably does not prevent two 5-pound or two 10-pound liquid propane tanks
from being disposed in the grill frame assembly at the same time” like so:
Sears’s ’874 Br. at 4. Sears’s argument is wrong because it misreads the relevant
limitations.
The first relevant limitation in claims 1-4 and 6-8 is “the frame assembly
having an interior volume capable of receiving two fuel tanks of equal size, except
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that the tank blocking structure divides the interior of the frame assembly to create
a plurality of compartments, such that only one of the two fuel tanks can be
disposed in the frame assembly … .” ’874 Patent at Claim 1 (emphasis added). The
same limitation, though put slightly differently, appears in claims 14-20 as: “the
frame assembly has a volume capable of housing both the fuel tank and
replacement fuel tank except for the tank blocking structure.” Id. at Claim 14
(emphasis added). The accused grills satisfy this limitation because their frame
assembly does have a volume capable of housing two equal-sized tanks except that
the tank blocking structure blocks out the second tank—the tanks just have to be
large enough, that is, 20 pounds. R. 357-5, Photographs. Because the claim
limitation speaks to capability, it is enough that the accused grills have the
capability, even though—as Sears’s photo shows—they do not use the capability in
the case of tanks smaller than 20 pounds. That they have the capability at all
satisfies the limitation, allows a finding of infringement, and so defeats summary
judgment. See Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321, 1329 (Fed. Cir. 2010)
(“[Where] the claim language only requires the capacity to perform a particular
claim element … it is [] enough to simply show that a product is capable of
infringement … .”).
Where Sears goes wrong is in taking the “tank blocking structure” limitation
out of context; specifically, reading it in isolation from the “frame assembly”
limitation of which it is a part. Sears’s argument relies on this Court’s construction
of the term “tank blocking structure” as “a structure that prevents more than one
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fuel tank from being placed inside the grill cart frame assembly at one time.” Claim
Construction Order at 16. From that definition, Sears argues that its accused grills
do not infringe this limitation because they do not always prevent more than one
fuel tank from being placed inside the grill cart frame assembly at one time. But
this ignores the reference to “frame assembly” within the Court’s construction of
“tank blocking structure.” That reference, in turn, points to the limitation that
includes the capability language (“an interior volume capable of ”) and incorporates
into the tank blocking structure limitation, converting it, in effect, into a capability
limitation as well.
Moreover, reading the two limitations—tank blocking structure and frame
assembly—together makes sense while reading them in isolation, like Sears does,
does not. The patent describes a tank blocking structure that goes inside a grill
frame assembly to do its work. Obviously, whether the structure blocks anything
depends on the size of the assembly. By connecting the two terms, that relationship
is taken into account. Disconnecting it, as Sears does, renders it meaningless. Sears
is not entitled to summary judgment as to non-infringement on the utility patent.
2. The Design Patents
Part of Weber’s case against Sears is the claim that Sears’s Kenmore Elite
grills—all three series—infringe Weber’s ’045 and ’834 design patents. In its
defense, Sears argues that the accused grills infringe neither patent and that both
patents are invalid.
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a. Design Patent Infringement
A defendant infringes a design patent by “appl[ying] the patented design, or
any colorable imitation thereof, to any article of manufacture for the purpose of
sale, or [by] sell[ing] or expos[ing] for sale any article of manufacture to which such
design or colorable imitation has been applied.” 35 U.S.C. § 289. Here, Sears no
doubt made and sold the accused grills, but Sears argues that no reasonable juror
could find that the accused grills bear the patented “design or a colorable imitation”
thereof. To determine whether the “patented design, or any colorable imitation
thereof” has, in fact, been applied to an accused “article of manufacture,” courts rely
on the ordinary observer test: “if, in the eye of the ordinary observer, giving such
attention as a purchaser usually gives, two designs are substantially the same, if
the resemblance is such as to deceive such an observer, inducing him to purchase
one supposing it to be the other, the first one patented is infringed by the other.”
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc)
(quoting Gorham Co. v. White, 81 U.S. 511 (1871)).
To apply this “ordinary observer” test, courts (and at trial, juries) must
compare the patented design and the accused product’s design. In practice, this
requires comparing the patent drawings to the accused product. Crocs, Inc. v. Int’l
Trade Comm’n, 598 F.3d 1294, 1304 (Fed. Cir. 2010) (“The proper comparison
requires a side-by-side view of the drawings of the ’789 patent design and the
accused products.”); L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125-26
(Fed. Cir. 1993). And one must carefully exclude the unclaimed and functional
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features from the visual comparison (a feat of mental gymnastics, to be sure),
because those features are not part of the patent’s scope. Elmer v. ICC Fabricating,
Inc., 67 F.3d 1571, 1577 (Fed.Cir.1995) (“A design patent protects the nonfunctional
aspects of an ornamental design.”); Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998
F.2d 985, 990 (Fed. Cir. 1993) (vacating order denying patent-holder’s motion for a
preliminary injunction because district court considered unclaimed features in its
infringement analysis).
Ultimately, what matters is the “‘overall ornamental visual impression.’”
Voltstar Technologies, Inc. v. Amazon.com, Inc., 2014 WL 3725860, at *2 (N.D. Ill.
July 28, 2014) (quoting OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405
(Fed. Cir. 1997)), aff’d, 599 F. App’x 385 (Fed. Cir. 2015). Thus, it is a mistake to try
comparing the designs strictly element-by-element. Crocs, 598 F.3d at 1303
(“Without a view to the design as a whole, the Commission used minor differences
between the patented design and the accused products to prevent a finding of
infringement.”). And “infringement can be found even if the accused and patented
designs are not identical.” Voltstar, 2014 WL 3725860, at *2 (citing OddzOn Prods.,
122 F.3d at 1405); see also 35 U.S.C. § 289 (defining infringement to include
“colorable imitation[s]”).
Prior art also comes into play. In determining whether the “overall
ornamental visual impressions” are “substantially similar,” “the ordinary observer
is deemed to view the differences between the patented design and the accused
product in the context of the prior art.” Egyptian Goddess, 543 F.3d at 676. This
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awareness informs the analysis in a particular way: “When the differences between
the claimed and accused design are viewed in light of the prior art, the attention of
the hypothetical ordinary observer will be drawn to those aspects of the claimed
design that differ from the prior art. And when the claimed design is close to the
prior art designs, small differences between the accused design and the claimed
design are likely to be important to the eye of the hypothetical ordinary observer.”
Id. There is no need, however, to even consider prior art if the designs are “plainly
dissimilar.” Id. at 678.
i. Infringement of the ’834 Design Patent
Summary judgment is warranted against Weber’s claim that Sears’s
Kenmore Elite 500/550, 600, and 700 Series grills infringe on the ’834 patent. To
repeat, the crucial principle on this claim is “when the claimed design is close to the
prior art designs, small differences between the accused design and the claimed
design are likely to be important to the eye of the hypothetical ordinary observer.”
Egyptian Goddess, 543 F.3d at 676. Here, the ’834 patent is very close in design to
the prior art, which includes several examples of grill shrouds that share the same
basic shape as the ’834 design:
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Weber’s ’834 Design
(R. 334-1, ’834 Patent at Fig. 1)
‘357 Design
(R. 334-2, ‘357 Patent at Fig. 1)
‘359 Design
(R. 334-3, ‘359 Patent at Fig. 1)
‘983 Design
(R. 334-4, ‘983 Patent at Fig. 1)
And one item of prior art also includes exposed rivets:
R. 334-6, Hu Dec. ¶ 2, Ex. A. So the prior art shares the same basic shape as the
’834 design and also shares rivets, flat side panels, and rotisserie notches.
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Given these similarities, “small differences between the accused design and
the claimed design” must take on more importance. Egyptian Goddess, 543 F.3d at
676. These differences include the indented side panels on the Kenmore versus the
flat side panels on the Weber:
Weber’s Flat Side Panels
(R. 334-1, ’834 Patent at Fig. 1)
The Kenmore Elite’s Indented Panels
(R. 423-1, Exemplar Photos)
They also include the different slope to the shape of the grill shroud:
Weber’s ’834 Design’s Profile
(R. 334-1, ’834 Patent at Fig. 2)
The Kenmore Elite’s Profile
(R. 423-1, Exemplar Photos)
The difference in the rear hinge on the Weber versus the Kenmore:
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Weber’s ’834 Design’s
Rear Hinge (R. 334-1,
’834 Patent at Fig. 2)
The 700 Series Rear Hinge
(R. 423-1, Exemplar Photos)
The 500/550 Series
Rear Hinge (R. 423-1,
Exemplar Photos)
And the shapes of the rotisserie notches:
Weber’s ’834 Design’s Notch
(R. 334-1, ’834 Patent at Fig. 2)
The Kenmore Elite’s Notch
(R. 423-1, Exemplar Photos)
To be sure, it is possible that, viewing the design against the accused products in
isolation, that is, without considering prior art, a reasonable jury could likely find
that the overall ornamental appearance is substantially similar because the
ordinary observer might not well give these differences enough attention. But,
under Egyptian Goddess, the designs cannot be viewed in isolation. And once the
prior art informs the comparison, the differences between the ’834 design and the
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Kenmore Elite grills stand out inescapably. Sears is therefore entitled to summary
judgment.
Like this case, Egyptian Goddess demonstrates the profound impact that
prior art has on the analysis. There, the patented design and the accused design
were, perhaps, even more similar to each other than they are here:
Patented Design Accused Design Prior Art Prior Art
But nonetheless the district court granted summary judgment on non-infringement
and the en banc Federal Circuit affirmed. Egyptian Goddess, 543 F.3d at 665, 680-
83. Although the accused nail buffer was similar to the patented nail buffer, those
similarities, when viewed in light of the prior art, melted away, leaving the
differences standing out. Same here.
Weber’s counterpunches miss the mark. First, Weber argues that the only
way to grant summary judgment to Sears is by way of impermissible “element-by-
element” comparison that “the Federal Circuit has rejected.” R. 372, Weber’s ’834
Resp. Br. at 2. Not so. The overall appearances of the ’834 design and the accused
grills are dissimilar enough that no reasonable jury could find them substantially
similar in light of the prior art. It helps to keep in mind that the ’834 design is not a
large design; it is really just the two end pieces of a grill shroud. (Much is
disclaimed by being drawn with broken lines.) There just are not many features of
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the design and all of them are different, in some way, from the accused products.
This is not a case, therefore, of over emphasizing small or minor differences in a
large design. Here, the claimed design itself is comprised of few features, so the
differences—the indented side panels especially—stand out.
Next, Weber tries to rely on Holecek’s expert testimony to create a jury
question on infringement. Weber’s ’834 Resp. Br. at 4-6. But as discussed above, the
Court has excluded Holecek’s opinions, so he cannot help Weber. Nor, in any event,
do his opinions adequately explain away the magnitude of the differences between
the designs when viewed in light of the prior art. And finally, Weber argues that the
riveted-band prior art grills are not prior art at all: “[T]here is a factual dispute as
to whether they even constitute prior art at all.” Weber’s ’834 Resp. Br. at 6. If
Weber were right, then it would have stronger case. This is because infringement is
likely “[i]f the accused design has copied a particular feature of the claimed design
that departs conspicuously from the prior art.” Egyptian Goddess, 543 F.3d at 676.
So if Weber departed from the prior art with the riveted bands and then Sears
followed, infringement would be more likely because the two designs would stand
out from the prior art in the same way. But Weber is wrong about there being a
factual dispute as to whether riveted bands appear in the prior art.
There is no genuine dispute as to whether a grill shroud with rivets like
Weber’s is among the prior art. Prior art includes designs “patented or described in
a printed publication in this or a foreign country or in public use or on sale in this
country, more than one year prior to the date of the application for patent.” 35
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U.S.C. § 102(b) (2006).6 Sears has identified a grill with rivets that was sold in this
country before that date. Hazel Hu declares that she has “personal knowledge of the
development and design” of two grills that were sold in the United States “at least
as early as the beginning of 2005.” R. 334-6, Hu Dec. ¶¶ 1-2. Both grills have riveted
bands on the grill shroud:
Hu Dec. ¶ 2, Ex. A. Hu Dec. ¶ 2, Ex. B.
And Hu has “invoices reflecting actual sales in commerce in the United States of
the” two grills “on March 18, 2005.” Hu Dec. ¶ 4 & Ex. C. The invoice does appear to
reflect sales on March 18, 2005, to a company in Michigan. Hu Dec. ¶ 4 & Ex. C.
Accordingly, shroud rivets were in the prior art.
Weber does have contrary evidence, but it does not create a jury question.
First, it offers the declaration of its Chief Marketing Officer, Michael Kempster.
Kempster avers that “[t]o [his] knowledge, there are only two grills in the world
that use the Weber Trade Dress; Weber’s Genesis and Summit products, on the one
hand, and the later introduced Sears Kenmore Elite on the other.” R. 373-3,
Kempster Dec. ¶ 22. The trade dress he is referring to includes riveted bands, so
6This provision was amended but patent claims with an “effective filing date before
March 16, 2013,” like all the patents at issue here, are evaluated under the prior version of
§ 102(b). Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 n.3 (Fed. Cir.
2015). The application date here was March 27, 2006, so the prior art date cut-off is March
27, 2005. R. 334-1, ’834 Patent at 1.
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say that, given their experience and position, it would surprise them if other riveted
grills were out there. And they were not—so far as the Court has seen—asked about
the Hu grills specifically. On top of that, Weber has not suggested that Hu is lying.
Accordingly, no reasonable jury could—on just the strength of Kobrick and
Kempster’s testimony—reject the Hu evidence.
Worth noting is that Sears offered two other riveted grills as prior art but did
not adequately support those submissions. First, Sears points to the BBQ-PRO 720
grill. R. 334-5, La Rose Dec. ¶ 2. The grill, as shown in the manual, has riveted
bands on the grill shroud:
La Rose Dec. ¶ 2, at Ex. 1 (Excerpted). But this does not help Sears for two reasons.
First, Sears does not claim that this manual was published or that the grill was sold
before the March 27, 2005 cut-off date. The La Rose declaration just says it was sold
before March 27, 2006 . La Rose Dec. ¶ 2. That is not necessarily early enough. And
it even if it was, Sears has no evidence that it is true. Sears’s declarant, La Rose,
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claims no personal knowledge of any sales; he just refers to an unexplained and
incomprehensible spreadsheet:
La Rose Dec. ¶ 2, at Ex. 2 (Excerpted). There is no apparent indication that these
are sales figures (as opposed to anything else). And, even if “MTH_NO” and
“WK_NO” help us identify the numbered month of a year or the numbered week of a
year (that is, maybe a “MTH_NO” of “200602” means February 2006) then all the
“sales” would still be too late. This grill does not help Sears.
Sears also put a drawing of a riveted Permasteel shroud in its brief:
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Sears’s ’834 Br. at 13. The problem is that Sears does not say that this drawing was
published at all, much less when. The only other mention of it in the record is
Gandy’s Rebuttal Report (remember that Jim Gandy is Sears’s design-patent
expert). R. 334-9, Gandy Reb. Rep. ¶ 17. And Gandy does not provide the necessary
foundational details either. So Sears has not shown that this drawing is prior art.
But, because Sears does have the Hu evidence, the prior art did include a grill
shroud with a band with exposed rivets.
ii. Infringement of the ’045 Design Patent
Moving onto the final patent at issue, a reasonable jury could find that the
three Sears Kenmore grill series—the 500/550, 600, and 700 series—infringe on the
’045 patent because a reasonable jury could find a substantial similarity based on
their overall ornamental visual impressions. Here are the grills side-by-side:
Weber’s ’045 Design Sears’s Kenmore Elite 500/550
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As this side-by-side comparison shows, the patented design and all7 the accused
grills share the same overall shape and proportions, and the shapes and relative
placement of key, eye-catching features adds, rather than detracts, from an
impression of similarity. These features include: the handle for the grill lid; the
symmetrical end tables; and the shapes and relative proportions of the end tables,
grill cart, and shroud.
Moreover, the prior art identified by Sears (at least on summary judgment,
where reasonable inferences must be drawn for Weber) actually heightens the
impression of similarity. “If the accused design has copied a particular feature of the
claimed design that departs conspicuously from the prior art, the accused design is
naturally more likely to be regarded as deceptively similar to the claimed design,
and thus infringing.” Egyptian Goddess, 543 F.3d at 676-77. Here, the prior art
designs are all fairly similar to the ’045 design and the accused grills:
7The Court has analyzed each grill series independently as the parties’ stipulated.
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R. 328-5, Chung
‘057 patent at Fig.
1.
R. 328-3, The
Coleman ‘359
patent
R. 328-6, The
Tseng ‘308 patent
R. 328-18, UniFlame
Design
Weber’s ’045 Design The Accused Kenmore
Design
R. 328-7, The Kenmore
141.16680 Design
But where the Weber design departs from the prior art, the Kenmore Elite grills
follow. Both share the round-edged, symmetrical end-tables with tool cut-outs.
Viewed together among the prior art designs, a reasonable juror could find the
Kenmore design and the Weber design are substantially similar.
Sears’s counterarguments are not convincing, largely because they require
the observer to give more attention to detail than is appropriate. The ordinary
observer only “giv[es] such attention as a purchaser usually gives.” Egyptian
Goddess, 543 F.3d at 670. The details Sears relies on are, or at least a reasonable
juror could find that they are, beyond that level of attention. Sears first argues that
the accused grills are “plainly dissimilar” (even without considering prior art) from
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the patent based on several differences: The Kenmore grills have side vents, the
patented design does not; the Kenmore grills have vents at the bottom of the back
panel, the patented design does not; the Kenmore grills have a skirt along the
bottom of the grill cart, the patented design does not; the Kenmore grills have four
(as opposed to three) cut outs for tools on the end tables that are slightly different in
shape than those in the patented design; and the Kenmore grills have knobs on the
front panel below the grill shroud (more knobs the higher the series number), and
the patented design does not. Sears’s ’045 Br. at 3-5.
Without downplaying these differences, and with due regard to the
subjectivity of the analysis, the Court cannot say that these differences prevent a
reasonable jury from finding substantial similarity. These differences are in
physically small, and not (relatively speaking) attention-grabbing features: knobs,
tool hooks, vents, and skirts. And they are on the back, sides, and bottom of the
grill—not front and center. A reasonable jury could find that the ordinary observer’s
eye, giving the appropriate level of attention, might well miss those points and
instead focus on the bigger ticket items like shape and proportion. Accordingly,
Sears’s motion is denied as to infringement of the ’045 patent.
b. Design Patent Invalidity
“A patent shall be presumed valid.” 35 U.S.C. § 282. And to overcome the
presumption of validity, the party asserting invalidity must show it by clear and
convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242 (2011).
Here, Sears argues that both the ’045 patent and the ’834 patent are invalid
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because they are indefinite and not enabling (which, as discussed later, is really a
single argument for purposes of this case) and because Weber introduced “new
matter” in violation of 35 U.S.C. § 112(a) and § 132. The Court will address
definiteness and enablement first, and then the new-matter arguments.
i. Definiteness/Enablement
Both the definiteness and enablement requirements come from 28 U.S.C.
§ 112, which applies to design patents by dint of 28 U.S.C. § 171 (“The provisions of
this title relating to patents for inventions shall apply to patents for designs … .”).
Section 112(b) sets forth the definiteness requirement, providing that “[t]he
specification shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the inventor or a joint inventor regards
as the invention.” And § 112(a) provides the enablement requirement: “The
specification shall contain a written description of the invention, and of the manner
and process of making and using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or with which it is most
nearly connected, to make and use the same … .”
As both parties’ briefing implicitly acknowledges, “[b]ecause the majority of
the disclosure in a design patent forms a part of the claim, the enablement and
indefiniteness requirements are often interchangeable. That is, where the drawings
contain a sufficiently serious inconsistency, the claim will be indefinite and also not
enabled.” See generally Matthew A. Smith, Design Patents, Ed.0.9 (Prelim. Draft),
73 (Dec. 17, 2012). In other words, design patents have a single claim and that
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single claim refers to drawings—which are supposed to enable a person skilled in
the art to copy the design. So, if the drawings are so muddled that a skilled artisan
cannot reasonably decipher what design is claimed, then the patent is indefinite,
and similarly, if the skilled artisan cannot copy the design, then the patent is not
enabling. That the parties make no separate arguments about enablement tends to
support the proposition that the two inquiries are really one in this case. So the
Court will analyze this basic question under the rubric of definiteness (as the
parties and their cases do) with the understanding that a finding of indefiniteness
would equal a finding of lack of enablement.
“[A] patent is invalid for indefiniteness if its claims, read in light of the
specification delineating the patent, and the prosecution history, fail to inform, with
reasonable certainty, those skilled in the art about the scope of the invention.”
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). “[F]or a
design patent to be invalidated for indefiniteness, ‘errors and inconsistencies in the
patent drawings must be material and of such magnitude that the overall
appearance of the design is unclear.’” Times Three Clothier, LLC v. Spanx, Inc.,
2014 WL 1688130, at *7 (S.D.N.Y. Apr. 29, 2014) (quoting HR U.S. LLC v. Mizco
Int’l, Inc., 2009 WL 890550, at *6 (E.D.N.Y. Mar. 31, 2009), and MPEP §§ 1503.02,
1504.04). Sears’s motion must be denied as to both the ’834 and ’045 design patents
because a reasonable juror could find that the inconsistencies identified by Sears
are not “of such a magnitude” as to render the patents invalid.
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’834 Design Patent
Sears argues that the ’834 grill-shroud patent falls short of the reasonable-
certainty standard. Sears’s ’834 Br. at 10-14. But Sears has not provided clear and
convincing evidence that there even are inconsistencies, much less material ones,
that would entitle Sears to summary judgment. The drawings, even with the Gandy
report’s narration, do not unambiguously show inconsistencies. And, even if they
did, a reasonable juror could deem them immaterial. At most, the patent does a poor
job depicting some aspects of one feature, namely, the shroud hinges. A reasonable
juror could conclude that the hinges’ size and position are material but that the
details are not. Accordingly, Sears’s motion must be denied on this point.
Rehearsing Sears’s arguments reinforces this conclusion. Sears argues that
the patent does not provide reasonable certainty because its drawings depict three
inconsistencies in the hinges at the back of the shroud. The first inconsistency is
that “Figures 1, 2, and 4 show the hinge as a flat surface devoid of any contour,
whereas Figures 5 and 7 depict the outer side edge of the hinge members as sloping
diagonally inwardly and merging with a vertical surface.” Sears’s ’834 Br. at 11-12.
Here are all the figures:
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And here are relevant close-ups:
Figure 2 Figure 7
The Court does not see the inconsistency—much less clearly and convincingly. The
contour visible in 5 and 7 is not definitively absent from the other figures; it might
just be that the perspective and the relatively small size of the hinge make it hard
to see the impact of the shading. It may be that there is a contour and an ordinary
designer would see it in 5 and 7 and see nothing to contradict it in the other figures.
Second, Sears complains that “in Figure 5, the bottom of the hinge members
appear to have a solid flat surface. However, as shown in Figure 6, the hinge
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members have a horizontal top portion that merges with a downwardly extending
vertical edge.” Sears’s ’834 Br. at 12. Here are the two figures:
Again, the Court cannot definitively agree or disagree with Sears’s reading of the
figures. And Gandy’s report is no help. Gandy’s report argues that the nature of the
drawings support his analysis. Gandy Rep. ¶ 61. He says Figure 1 is a “perspective
view” and that the rest are “either elevation or plan views.” Id. He does not say
what these terms mean or why this helps his case. Sears brief adds no further
explanation.
Third, Sears says that in “Figures 2 and 4, the hinge members have a gentle
sloping diagonal top edge; whereas in figure 6, the top edge thereof appears to be
horizontal straight.” R. 333, Sears’s ’834 Br. at 12. Once again, the Court cannot
follow Sears’s reading of the images or agree that the relatively sparse shading
clearly and convincingly reveals the alleged inconsistencies.
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’045 Design Patent
Here, Sears argues that the ’045 patent fails to satisfy the reasonable-
certainty standard because of three inconsistences in the drawings.8 First, Sears
argues that figure 1, on the one hand, and figures 4 and 5, on the other, are
inconsistent. R. 327, Sears’s ’045 Br. at 10-11. The inconsistency is that figures 4
and 5 depict a narrow band along the bottom of the grill cart while figure 1, in the
corresponding location, does not. Sears’s ’045 Br. at 10-11. Here are the full figures:
And here, up close, is the relevant area:
8 Although Sears says that “Gandy identifies other areas of the ’045 patent that
similarly render it invalid,” R. 327, Sears’s ’045 Br. at 12, the Court declines to consider
arguments that only incorporate by reference another document and are not developed in
the briefs.
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Figure 1 (Excerpt) Figure 4 (Excerpt)
The Court already recognized this as “clearly inconsistent.” Claim Construction Op.
at 28 (“there is an inconsistency in those figures”). Weber asks the Court to
reconsider this finding. And it presents Alden’s testimony that, contrary to the
Court’s conclusion, the inconsistency is a matter of perspective.
Second, Sears argues that one skilled in the art would be “incapable” of
“under[standing]” what “the internal structure in Figure 3 shown in solid lines in
open areas to the right and left of the firebox, as well as a horizontal member and a
rectangular structure … are intended to represent.” Sears’s ’045 Br. at 10-11. Here
is the relevant portion of Figure 3:
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A reasonable juror could find that these inconsistencies—which the Court
will assume, without deciding,9 exist—are not of such magnitude that the overall
appearance of the design is unclear for three reasons. First, this is battle of the
experts. Sears has Gandy saying that the inconsistencies would baffle those skilled
in the art: “[D]ue to the inconsistencies and discrepancies between the views of the
drawing of various features of the claimed design … one skilled in the art would not
be able to understand the bounds of the claim … .” Gandy Rep. ¶ 82. Weber has
Alden saying the opposite: “[The] alleged inconsistencies in the drawings of the ’045
patent are inconsequential and do not, either singularly or in toto, warrant a
finding of invalidity … any alleged inconsistencies in the depiction of the features
identified by Mr. Gandy above are not sufficiently serious to prevent an ordinary
observer, much less a trained designer, from fully understanding the intended
overall design of the ’045 patent.” R. 377-7, Alden Rep. at 26. The Court cannot, on
summary judgment, resolve the conflict in this testimony. And without resolving
that conflict, the Court cannot award summary judgment to Sears based on the
alleged indefiniteness of the ’045 patent.
Also working in Weber’s favor is that Sears’s principal case is
distinguishable. Sears relies heavily on Times Three Clothier, LLC v. Spanx, Inc.,
2014 WL 1688130, at *7 (S.D.N.Y. Apr. 29, 2014). There, a design patent was
invalidated for indefiniteness based on inconsistent drawings. Id. The design was
for a shirt-like garment with two “ornamental lines.” Id. In some drawings the top
9 The Court does adhere to the earlier claim-construction finding that there is an
inconsistency between figure 1 versus figures 4 and 5 as to the narrow band on the bottom
of the grill.
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line, right under the bust, was flat, in other drawings it was angled. Id. This was
important: “The first ornamental line—one of only two—is a fundamental part of
the claimed design.” Id. It is not as obvious that the narrow band, chamber lip, and
back interior portions of the whole grill are as fundamental to the overall design.
Many other cases invalidating design patents are similarly based on inconsistencies
in prominent features, rather than minor ones. E.g., Eclectic Products, Inc. v.
Painters Products, Inc., 2015 WL 930045, at *3 (D. Or. Mar. 2, 2015) (“The words of
the patent lay claim to ‘an applicator cap, as shown,’ but the drawings depict an
entire tube dispenser with a threaded neck and a sponge tip but, notably, no cap
that fits over the tube.”). Sears has not cited a case granting or affirming summary
judgment based on inconsistencies in relatively minor features (or at least a jury
reasonably could find that the features are minor).
Third, in light of the prior reasons, the presumption of validity and the
corresponding requirement that Sears show invalidity by clear and convincing
evidence tip the scales in Weber’s favor. Sears needed to show not only that the
inconsistencies were there, but also that they were material enough to invalidate
the patent. On the latter score, their evidence does not so overwhelm the Alden
declaration as to warrant judgment in their favor.
ii. New Matter
Sears’s final set of invalidity arguments is premised on the ban against the
insertion of “new matter” during the patent application process. When a patent
application is rejected, the applicant may file an amendment to cure the problem
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behind the rejection. See 35 U.S.C. § 132. But “[n]o amendment shall introduce new
matter into the disclosure of the invention.” Id. This “prohibition against adding
new matter [is] enforce[d] under 35 U.S.C. § 112(a) because [if new matter is added,
then] the claims are not supported by the disclosure in the original application [as
required by § 112(a)].” Commonwealth Scientific & Indus. Research Organisation v.
Buffalo Tech. (USA), Inc., 542 F.3d 1363, 1378-79 (Fed. Cir. 2008). To determine
whether something added is the kind of new matter prohibited by §§ 112 and 132,
courts ask if “the [original] disclosure … reasonably conveys to the artisan that the
inventor had possession at [the time of the original disclosure] of the later claimed
subject matter [in the new material].” In re Daniels, 144 F.3d 1452, 1456 (Fed. Cir.
1998) (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir.
1985)) (internal quotation marks omitted). Here, Sears argues that both the ’834
patents and the ’045 patent are invalid because the final drawings in each add “new
matter” that was not present—in the In re Daniels sense—in their respective
original disclosures. Sears’s ’045 Br. at 13-14; Sears’s ’834 Br. at 13.
’045 Analysis
Sears argues that the ’045 patent is invalid under § 112(a) because “its
drawings introduce new matter not supported by the original disclosure.” Sears’s
’045 Br. at 13-14. The alleged new matter has to do with the end tables on either
side of the grill box. Id. There are two alleged differences. First, according to Sears,
the original disclosure “has shelves that are recessed slightly down and inward[] …
showing a distinct edge defining a center portion.” Id. at 13. But the drawings “do
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not show this edge.” Id. Second, shelves “protrude[e]” from the center panel in the
original disclosure but, in the drawings, appear flush. Id. at 14.10 Under the test for
new-matter arguments like this one, the patent is valid if “the [original] disclosure
… reasonably conveys to the artisan that the inventor had possession at [the time of
the original disclosure] of the later claimed subject matter [in the new drawings].”
In re Daniels, 144 F.3d at 1456. Here, Weber has the better of the argument for
three reasons.
First, as the Court has previously noted, the original disclosure photos that
Sears relies on are of “extremely poor image quality.” Claim Construction Order at
27. This makes it hard to say as a matter of law whether the differences Sears notes
even exist in the first place. Second, keeping in mind that the patent is for the
ornamental design for an entire grill, even assuming the differences exist, the Court
cannot say that no reasonable juror could find that the differences “vary so
significantly from the original design figures as to represent new matter.” Australia
Vision Servs. Pty. Ltd. v. Dioptics Med. Products, Inc., 29 F. Supp. 2d 1152, 1160
(C.D. Cal. 1998). And finally, the Court has in mind the presumption of validity and
Sears’s corresponding burden to show invalidity by clear and convincing evidence.
’834 Analysis
Finally, Sears argues that the ’834 patent also is invalid because its drawings
introduce new matter. Sears’s ’834 Br. at 13. Specially, Sears says “there is nothing
10 Again, Sears says that “Gandy identifies other aspects of the ’045 patent that are
not apparent from the obscure photos of the original patent application.” Sears’s ’045 Br. at
14. Because Sears again did not develop an argument on those points in its brief, the Court
will not consider them.
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in the original disclosure to support the shape and appearance of the rear hinge
members has shown in Figure 6 of the ’834 patent.” Id. at 13-14. Even more
specifically, Gandy explains that the problem is not inconsistency but opacity: “In
Figure 6 of the original disclosure it cannot be determined what the shape and
appearance of the rear hinge members are due to the solid black illustration.” R.
334-13, Gandy Rep. ¶ 65.
This argument does not warrant summary judgment for two reasons. First,
there is again a battle of the experts. Alden contradicts Gandy on this point, R. 417-
1, Alden Rep. at 23-25, and the Court cannot choose to believe one over the other on
summary judgment. Second, and relatedly, a reasonable jury could find that the
original disclosure has enough views to sufficiently describe the shape of the
hinge—the jury would have to consider the figures from the perspective of a skilled
artisan, and thus would have to consider Alden’s opinion that a skilled artisan
could, with reasonable certainty, copy the design.
V. Conclusion
Sears’s motions are granted in part and denied in part as follows:
Sears’s motion for summary judgment as to the ’874 patent, R. 345, is denied
as to infringement, granted as to invalidity on patent claims 9-13, and denied
as to invalidity on all other claims in the patent;
Sears’s motion for summary judgment as to the ’045 patent, R. 326, is denied
in its entirety; and,
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Sears’s motion for summary judgment as to the ’834 patent, R. 332, is
granted as to infringement and denied as to invalidity, meaning that Sears is
entitled to judgment as a matter of law on Count 4 of its Counterclaim, R.
139, and on Count 2 of Weber’s complaint, R. 138.
With that, the case is pared down to the following surviving claims and
counterclaims. For Weber:
Count 1 – Infringement of the ’874 Patent
Count 3 – Infringement of the ’045 Patent
Count 4 – Trade-dress Infringement
And for Sears:
Counterlcaim 1 – Declaration of Noninfringement as to the ’874 Patent
Counterclaim 2 – Declaration of Invalidity as to the ’874 Patent
Counterclaim 3 – Declaration of Unenforceability as to the ’874 Patent
Counterclaim 6 – Declaration of Noninfringement as to the ’045 Patent
Counterclaim 7 – Declaration of Invalidity as to the ’045 Patent
Counterclaim 13 – Breach of Contract
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As for Sears’s Counterclaim 5, which seeks a declaration of invalidity as to the ’834
Patent, it is likely that this claim is now moot because Sears won summary
judgment against the infringement claim. If either party disagrees, that party
should raise the issue at the next status hearing.
ENTERED:
s/Edmond E. Chang
Honorable Edmond E. Chang
United States District Judge
DATE: December 22, 2015